カテゴリー: Invalidation trial

BRIDGESTONE Victorious in Trademark Dispute for B Mark Logo

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The Japan Patent Office (JPO) upheld an invalidation petition by the world’s largest tire and rubber company, Bridgestone Corporation against TM Reg. no. 5664068 for the “SB NAGAMOCHI” mark due to a likelihood of confusion with its well-known B mark logo.
[Invalidation case no. 2018-890068, Gazette issue date: March 27, 2020]

TM Registration no. 5664068

Disputed mark, consisting of “SB” logo and a word “NAGAMOCHI” in a smaller plain letter (see below left), was applied for registration on September 13, 2013 in respect of non-electric prime movers for land vehicles, not including their parts; AC motors or DC motors for land vehicles, not including their parts; automobiles and their parts and fittings; two-wheeled motor vehicles, bicycles and their parts and fittings; adhesive rubber patches for repairing tubes or tires in class 12.

Without confronting with a refusal during substantive examination, disputed mark was registered on April 18, 2014.

Applicant of disputed mark, RMP NAGAMOCHI Technology Japan Ltd promotes various structural parts for automobiles, e.g. cylinders, brakes and clutch hoses, brake calipers, brake pads, rubber parts, filters, gaskets. Disputed mark was actually used on brake pads (see below).

Petition for invalidation

Japan Trademark Law has a provision to retroactively invalidate trademark registration for certain restricted reasons specified under Article 46 (1) provided that interested party files an invalidation petition within five-year statute of limitations.

Bridgestone Corporation, a Japanese tire and rubber company, filed a petition for invalidation against disputed mark on September 5, 2018. Bridgestone argued the mark shall be invalidated due to a likelihood of confusion with its famous “B” mark logo (see above right) when used on all goods in class 12 based on Article 4(1)(xv) of the Trademark Law.

Article 4(1)(xv) provides that a mark shall not be registered where it is likely to cause confusion with other business entity’s well-known goods or services, to the benefit of brand owner and users.

Board Decision

In the decision, JPO Trial Board sided with Bridgestone by finding that:

  1. In 2016, Bridgestone holds top-ranked market share (14.6%) of automobiles tires in the world, the largest market share (55.9%) of tires and rubber products in Japan.
  2. Bridgestone has consecutively used “B” mark logo on goods and promotions as a symbolic house mark of Bridgestone group since 1984 and even when announcing sponsorship partnership with the Olympic Games and Tokyo2020 Paralympic Games Gold Partner.
  3. Based on the foregoing, it is unquestionable that “B” mark logo has acquired strong and considerable reputation as a source indicator of Bridgestone tires and rubber products among relevant traders and consumers of goods in question.
  4. “B” logo is a ‘strong’ mark because it is depicted with distinctive figurative element so that the mark as a whole can be seen sufficiently distinguishable from an ordinary “B” letter.
  5. Both marks look different when compared in its entirety, however, 2nd letter of “SB” logo is considered highly similar to “B” mark logo from visual point of view.
  6. Disputed goods “automobiles and their parts and fittings; two-wheeled motor vehicles, bicycles and their parts and fittings” and “tires” have the potential to be connected in the minds of the consumers. Since respective products share distributors or can be found in the same stores, there finds proximity in channels of trade and marketing of the products on which the marks are used.
  7. Foregoing weighs in favor of finding confusion. Thus, disputed mark shall be invalidated in violation of Article 4(1)(xv) of the Trademark Law.

SWATCH Defeated in SWATCH vs iWATCH Trademark Dispute

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The Trial Board of Japan Patent Office (JPO) dismissed an invalidation petition by Swiss watch giant, Swatch against TM Reg. no. 5849925 for word mark “iWATCH” owned by U.S. tech giant, Apple Inc.
[Invalidation case no. 2017-890071, Gazette issue date: January 31,2020]

iWATCH

Disputed mark, consisting of a word “iWATCH” in plain block letters (see below), was applied for registration in the name of Apple Inc. on April 25, 2014 in respect of watches, clocks and other goods in class 14.

Immediately after registration on May 13, 2016, Swatch filed an opposition to challenge registrability of disputed mark based on Article 3(1)(iii), 3(1)(vi), 4(1)(xi), 4(1)(xv), 4(1)(xvi) of the Japan Trademark Law, but in vain. [Opposition case no. 2016-900234]

Article 3(1)(iii) is a provision to prohibit any mark from registering where the mark solely consists of elements just to indicate, in a common manner, the place of origin, place of sale, quality, materials, efficacy, intended purpose, quantity, shape (including shape of packages), price, the method or time of production or use.

Article 3(1)(vi) is a comprehensive provision to prohibit any mark lacking inherent distinctiveness from being registered.

Article 4(1)(xi) is a provision to refrain from registering a junior mark which is deemed identical with, or similar to, any senior registered mark.

Article 4(1)(xv) provides that a mark shall not be registered where it is likely to cause confusion with other business entity’s well-known goods or services, to the benefit of brand owner and users’ benefits.

Article 4(1)(xvi) is a provision to prohibit registration of any mark likely to mislead quality of goods or services.

Invalidation Trial

Japan Trademark Law provides a provision to retroactively invalidate trademark registration for specific grounds under Article 46 (1).

In an effort to argue against the opposition decision, Swatch filed a petition for invalidation against disputed mark on October 23, 2017. Swatch argued disputed mark “iWATCH” shall be invalid because of following reasons:

  1. Given disputed mark consists of an alphabet letter “i” and a generic term in relation to a designated goods ‘watch’, the mark can be merely perceived to indicate a value, code, type, mode or standard of ‘watch’. If so, disputed mark shall be lack of distinctiveness and revocable under Article 3(1)(vi) in relation to the goods.
  2. Likewise, relevant consumers would misconceive quality of goods when disputed mark is used on goods other than ‘watch’ in class 14, e.g. jewelry, key holders, jewelry boxes, accessories. If so, disputed mark shall be revocable under Article 4(1)(xvi) in relation to goods other than ‘watch’.
  3. Disputed mark “iWATCH” resembles “SWATCH” from visual and phonetic points of view. It is unquestionable SWATCH has become remarkably famous for watches and fashion items of Swatch Group. If so, a likelihood of confusion will arise between “iWATCH” and “SWATCH” when disputed mark is used on goods in class 14. Thus, disputed mark is revocable under Article 4(1)(xi).

Board Decision

In the decision, the Board sided with Apple Inc. and found that:

  • The Board considers the term “iWATCH” is a coined word in its entirety which does not give rise to any specific meaning at all. Therefore, it is unlikely that relevant consumers conceive disputed mark just as a qualitative indication of goods in question.
  • The Board admits “SWATCH” has been acquired a high degree of reputation and popularity among relevant consumers and traders as famous watch of Swatch Group. In the meantime, the term appears less unique and creative since it is a dictionary word meaning ‘a sample piece (as of fabric) or a collection of samples’.
  • Difference on initial letter of both marks shall not be negligible on the case. The Board has no good reason to believe both marks are deemed similar from visual, phonetic and conceptual points of view.
  • If so, it is unlikely to happen that relevant consumers with an ordinary care would associate or misconceive disputed mark with Swatch or any entity systematically or economically connected with claimant even when used on ‘watch’.

Based on the foregoing, the Board concluded “iWATCH” shall be irrevocable in relation to “SWATCH” and dismissed Swatch’s invalidation petition wholly.

KUMAMON triumphs over bear mascot trademark battle

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The Japan Patent Office (JPO) sided with Kumamon and declared invalidation of trademark registration no. 5997141 for a bear-like design mark due to a likelihood of confusion with Kumamon.
[Invalidation case no. 2019-890004, Gazette issue date: February 28, 2020]

KUMAMON

Have you ever heard of “Kumamon”?

Nowadays, we are accustomed to see there are many organizations that create and use mascots to further their brands. Kumamon is a cuddly character with its pitch-black fur, red cheeks and white eyes designed as the official mascot (see below) of the Kumamoto Prefecture, a small prefecture in western Japan.

Kumamon made its debut in 2011 as part of a tourism promotion campaign for the Kyushu high-speed railway line. At the time a wave of local municipalities and companies sought to use ‘yuru-kyara’, or ‘relaxing characters’, to promote local products and attractions. Kumamon was hired as a part-time civil servant at Kumamoto before being elevated to sales manager. Such topics generated headlines and helped push Kumamon’s popularity beyond Kumamoto.

As an iconic symbol of ‘relaxing characters’, Kumamon has become a social and cultural phenomenon nationwide. Sales of goods using the Kumamon mascot topped 150 billion yen ($1.4 billion) in 2018.

To protect and promote the mascot, the Kumamoto Prefecture has registered its figurative image reproduced in 2D for various classed of goods and services in Japan as well as neighboring countries.

Disputed Mark

On March 21, 2017, Unique Design Company Limited (Belize) , sought to register the mark consisting of a bear-like design and three Chinese characters “熊本熊” which mean Kumamoto’s bear (see below) to be used on goods in class 11. The JPO granted protection of opposed mark on October 27, 2017.

Invalidation Trial

To challenge the validity of disputed mark, on January 25, 2019, the Kumamoto Prefecture filed an invalidation action to the JPO based on Article 4(1)(vi), (vii), (xi), (xv) and (xix) of the Japan Trademark Law. Kumamoto Prefecture argued that the figurative element of disputed mark closely resembles to the Kumamon character well-known for the official mascot of the Kumamoto Prefecture from appearance. Besides, the literal element of disputed mark gives rise to a similar meaning related to the Kumamoto Prefecture and Kumamon. If so, disputed mark as a whole shall be invalid due to a likelihood of confusion with Kumamon.

JPO Decision

The Invalidation Board of JPO found that:

  1. Unquestionably, Kumamon has acquired a remarkable degree of reputation and popularity nationwide as the official mascot of the Kumamoto Prefecture well before the filing date of disputed mark through continuous activities, promotions, and actual use on various goods since 2011. In addition, it becomes public among relevant consumers that the literal element of disputed mark “熊本熊” gets to be known as a Chinese name of Kumamon in China and neighboring countries.
  2. Since Kumamon has distinctive features visually different from wild bear, the mascot shall be deemed unique, creative, and impressive in itself.
  3. From appearance the bear-like design of disputed mark is confusingly similar to Kumamon. It gives rise to a similar meaning to Kumamon, the mascot originated from bear in the Kumamoto Prefecture. Likewise, the literal element of disputed mark gives rise to the same meaning. If so, both marks are considered highly similar.
  4. Due to free-use policy for brand promotion to domestic merchants (Kumamoto lets domestic companies use the character for free, but charges a license fee of a few percent on product sales by foreign companies), Kumamon mascot has been commercially used on wide range of goods over 10,000 items. 7-year cumulative sales exceed 510 billion JP-yen. If so, disputed goods in class 11, e.g. oil stoves, heaters, pocket warmers, electric foot warmers, shall be closely associated with the Kumamon goods in channels and consumers.

Based on the above findings, the Board concluded that relevant consumers and traders are likely to confuse disputed mark with Kumamon or misconceive a source from any entity systematically or economically connected with the Kumamoto Prefecture. Thus, disputed mark shall be invalidated in violation of Article 4(1)(xv) of the Trademark Law.

Trademark Battle – PUMA vs KUMA

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The Japan Patent Office (JPO) decided to invalidate trademark registration no. 5661816 for a stylized word “KUMA”, which means ‘bear’ in Japanese, due to similarity to, and a likelihood of confusion with a world-renowned sports brand, PUMA. [Invalidation case no. 2019-890021, Gazette issue date: January 31,2020]

KUMA mark

Disputed mark (see below),consisting of a stylized word “KUMA” with a partial island shape of Hokkaido, Japan’s most northerly main island, depicted on the inside of letter “U”, was filed on October 24, 2013 by a Japanese business entity having its principal place of business in Hokkaido over various goods in class 25 including sportswear and shoes.

It was found Applicant has used the KUMA mark on T-shirts and other goods with a bear silhouette facing left in the upper right of the mark.

The JPO admitted registration on April 4, 2014 and published for opposition on May 13, 2014.

PUMA’s Opposition / Invalidation Trial

On June 13, 2014, PUMA SE filed an opposition against the KUMA mark based on Article 4(1)(vii) and 4(1)(xv) of the Trademark Law. PUMA argued relevant consumers or traders are likely to confuse or misconceive a source of disputed mark with PUMA when used on designated goods in class 25 because of a high reputation and close resemblance between PUMA word logo and the KUMA mark.

The Opposition Board admitted a high degree of popularity and reputation of PUMA word logo, however, Board dismissed the opposition entirely due to unlikelihood of confusion because of a low degree of similarity between the marks (Opposition case no. 2014-900177).

Subsequently, PUMA SE entrusted the case to us. On April 3, 2019, just one day before the lapse of five-year Statute of limitations, MARKS IP LAW FIRM on behalf of PUMA SE requested for an invalidation trial and challenged invalidating the KUMA mark based on Article 4(1)(vii), (xi), (xv) and (xix) of the Japanese Trademark Law.

Article 4(1)(vii) of the Trademark Law prohibits any mark likely to cause damage to public order or morality from registration.

Article 4(1)(xi) is a provision to refrain from registering a junior mark which is deemed identical with, or similar to, any senior registered mark on identical or similar goods/service.

Article 4(1)(xv) prohibits to register a trademark which is likely to cause confusion with a business of other entity.

Article 4(1)(xix) prohibits to register a trademark which is identical with, or similar to, other entity’s famous mark, if such trademark is aimed for unfair purposes, e.g. gaining unfair profits, or causing damage to the entity.

Invalidation Decision

The Invalidation Board reversed the opposition decision and decided in favor of PUMA on all grounds by finding that:

  1. PUMA word logo has been continuously well-known in Japan for a source indicator of PUMA in connection with sports shoes, sportswear and others among relevant consumers and traders.
  2. A mere difference on initial letter of both marks and the Hokkaido island shape shall be insufficient to overturn an overall impression of the mark from visual and phonetic points of view. Conceptually, the KUMA mark, having a meaning of bears in Japanese, would give rise to a similar meaning with PUMA word logo, four-footed mammal. If so, by taking into consideration a high degree of reputation and popularity of PUMA word logo, both marks shall be deemed similar.
  3. Configuration of PUMA word logo looks unique, creative, and impressive in itself.
  4. Besides, given close association between designated goods in class 25 and PUMA’s business, relevant consumers of the goods in question with an ordinary care are likely to confuse its source with PUMA.
  5. It has good reasons to believe that the applicant of disputed mark did fraudulently apply the KUMA mark for registration with an aim to free-ride and dilute PUMA’s goodwill based on totality of the circumstances.
  6. If so, applicant must have filed disputed mark with a malicious intention to dilute or do harm to PUMA’s goodwill, which was impermissible to protect public order and morals

Based on the foregoing, the JPO decided to invalidate the KUMA mark based on Article 4(1)(vii), (xi), (xv) as well as 4(1)(xix) of the Japan Trademark Law.

PUMA’s Fight Against Logo Parody

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On August 1, 2019, the Japan Patent Office (JPO) decided to invalidate trademark registration no. 5861923 for composite mark consisting of a word “KUMA”, which means ‘bear’ in Japanese, and the bear device by finding a likelihood of confusion with a world-renowned sports brand, PUMA and detrimental effect to public policy or morality.
[Invalidation case no. 2019-890001]

KUMA device mark

Disputed mark (see below) was filed on January 7, 2016 by a Japanese business entity in Hokkaido, Japan’s most northerly main island, an otherworldly volcanic land with eastern Asia’s highest concentration of brown bears, over various goods in class 25 including sportswear and shoes.

Precedently, applicant applied for registration of following trademarks, consist of four alphabets in bold font and an animal silhouette facing left depicted in the upper right of the alphabets, on goods in classes 9, 14, 16, 24, 25 and 28, but in vain.

“UUMA” means ‘horse’, “BUTA” means ‘pig’, “KUMA” means ‘bear’ in Japanese. It is obvious that both literal element and figurative element of respective mark give rise to a same meaning, which is the same for PUMA.

It is likely the applicant intended to use these marks on souvenirs from Hokkaido since we get accustomed to see scenes at a famous tourist spot that T-shirts and other small items displayed at gift shops parody famous brands by featuring local specialty to attract tourists for fun.

PUMA’s Opposition / Invalidation Trial

On September 26, 2016, PUMA SE filed an opposition against the KUMA mark based on Article 4(1)(vii) and 4(1)(xv) of the Trademark Law. PUMA argued relevant consumers or traders are likely to confuse or misconceive a source of disputed mark with PUMA when used on designated goods in class 25 because of a high reputation and close resemblance between PUMA logo and the KUMA mark.

The Opposition Board admitted a high degree of popularity and reputation of PUMA logo, however, the Board dismissed the opposition entirely due to unlikelihood of confusion as a result of low degree of similarity between the marks (Opposition case no. 2016-900308).

Subsequently, PUMA SE entrusted the case to MARKS IP LAW FIRM. On New Year’s Eve of 2018, MARKS IP LAW FIRM on behalf of PUMA SE requested for an invalidation trial and sought to annul the KUMA mark on the same grounds.

Invalidation Decision

The Invalidation Board reversed the opposition decision and decided in favor of PUMA by finding that:

  1. PUMA logo has been continuously famous as a source indicator of PUMA in connection with sports shoes, sportswear and others among relevant consumers and traders in Japan.
  2. Configuration of PUMA logo looks unique, creative, and impressive in itself.
  3. Regardless of visual difference in detail between the marks, overall impression of both marks is quite similar.
  4. Given close association between designated goods in class 25 and PUMA business, relevant consumers of the goods with an ordinary care are likely to confuse its source with PUMA
  5. Besides, it is presumed the current registrant of disputed mark was knowingly assigned a similar KUMA mark that applicant had a fraudulent intent to free-ride and dilute PUMA’s goodwill.
  6. If so, current registrant must have filed disputed mark with a fraudulent intention to dilute or do harm to PUMA’s goodwill given a close resemblance of between disputed mark and a rejected KUMA mark (see above right).

Based on the foregoing, the JPO decided to invalidate disputed marks based on Article 4(1)(xv) as well as 4(1)(vii) of the Japan Trademark Law.

Patagonia Victorious in Trademark Battle

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The Trial Board of Japan Patent Office (JPO) recently upheld an invalidation petition by US outdoor apparel company, Patagonia Inc. against TM Reg. no. 6028801 for the “royalwest” mark in combination with figurative elements due to a likelihood of confusion with Patagonia logo.
[Invalidation case no. 2018-890048, Gazette issue date: June 28, 2019]

TM Registration no.6028801

Disputed mark, consisting of a word “royalwest” and figurative elements (see below left), was applied for registration on April 13, 2017 in respect of apparels and other goods in class 25.

Without confronting with a refusal during substantive examination, disputed mark was registered on March 23, 2018.

Petition for invalidation

Japan Trademark Law provides a provision to retroactively invalidate trademark registration for certain restricted reasons specified under Article 46 (1).

US outdoor apparel company Patagonia Incorporated filed a petition for invalidation against disputed mark on June 29, 2018. Patagonia argued it shall be invalidated due to similarity to an owned senior trademark registration no. 5891980 for the Patagonia mark with figurative elements depicting mountain landscape and sky in blue, purple and orange color (see above right), and a likelihood of confusion with its famous brand when used on designated goods in class 25 based on Article 4(1)(xi) and (xv) of the Trademark Law.

Board decision

At the outset, the Board admitted the Patagonia logo has acquired a high degree of popularity and reputation as a source indicator of Patagonia Inc. among relevant consumers in connection with outdoor goods.

In assessing similarity of both marks, the Board found that a literal element of respective mark is unquestionably dissimilar. However, even if both marks give rise to a different pronunciation and concept, by taking account of similar factors: (1) coloring of the sky, (2) font design and size, (3) rectangular outline, (4) black silhouette with a white border line, (5) configuration and proportion of respective elements, and balancing them comprehensively, relevant consumers with an ordinary care at the sight of both marks would conceive a same impression from appearance and associate disputed mark with Patagonia. If so, it is obvious that visual similarity plays a key role in the assessment. A phonetical and conceptual difference arising from literal element is insufficient to negate similarity between the marks in its entirety.

Based on the foregoing, the Board concluded that, from totality of circumstances and evidences, relevant traders or consumers are likely to confuse or misconceive a source of disputed mark with Patagonia or any entity systematically or economically connected with the opponent when used on apparels and any other designated goods in class 25 and declared invalidation based on Article 4(1)(xi) and (xv).

Boeing Wins 777 Trademark Victory

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The Trial Board of Japan Patent Office (JPO) recently upheld The Boeing Company’s invalidation petition against TM Reg. no. 5990529 for the “PACHINKO&SLOT AIRPORT 777” mark in respect of amusement services in class 41 due to a likelihood of confusion with Boeing’s famous jet airliner “777”.
[Invalidation case no. 2018-890054, Gazette issue date: May 31, 2019]

AIRPORT 777

Mark in dispute, consisting of three terms, “PACHINKO&SLOT” and “AIRPORT777” in English and Japanese in three lines, and a device of jet airliner (see below), was applied for registration by SEA Co., Ltd., a Japanese business entity, on February 17, 2017 in respect of providing Pachinko and slot machine parlors, game services provided online from a computer network or mobile phone; providing amusement facilities and other services in class 41.

Opposed mark “AIRPORT 777”

SEA CO., Ltd. has been operating pachinko and slot machine parlors in the name of AIRPORT 777.

Pachinko& Slot Airport 777

Without confronting with a refusal during substantive examination, the AIRPORT 777 mark was registered on October 20, 2017.

Petition for Invalidation

Japan Trademark Law provides a provision to retroactively invalidate trademark registration for certain restricted reasons specified under Article 46 (1).

The Boeing Company, the world’s largest American aerospace company and leading manufacturer of commercial jetliners, defense, space and security systems, and service provider of aftermarket support, filed a petition for invalidation against opposed mark on July 17, 2018. Boeing argued the AIRPORT 777 mark shall be invalidated due to a likelihood of confusion with “777” The Boeing 777 when used on above designated services in class 41 based on Article 4(1)(xv) of the Trademark Law.

The Boeing 777 is the world’s largest twin-engine jet airliner, first flown in June of 1994. Commonly referred to as the ‘Triple Seven,’ the 777 is Boeing’s first fly-by-wire airliner (an electronic system that replaces the conventional manual flight controls of an aircraft) and the first commercial aircraft entirely computer-designed.

In Japan, Boeing has successfully registered three digits “777” in respect of jet airliners in class 12 since 2001. Trademark Registration no. 4456004 (see below).

Japan TM Registration no. 4456004

Board decision

The Board admitted that the “777” mark has acquired a high degree of popularity and reputation as a source indicator of Boeing jetliners among relevant consumers.

In assessment of the similarity between two marks, at the outset the Board found that three digits 777 implies a meaning of wining jackpot in association with pachinko and slot machines. However, by taking account of a term “AIRPORT” and a silhouette of jet airliner, the Board considered it is likely that relevant consumers with an ordinary care shall connect or associate the services using opposed mark with The Boeing 777. If so, it is unquestionable that opposed mark is highly similar to a famous mark “777”. Besides, since recent game and amusement industry have a trend to introduce flight and airplane games with new technology or to use images, video and sounds of jet airliner, it is not unreasonable to find above services in class 41 are closely related to jet airliners. In view of Boeing’s business portfolio, it is highly predictable that The Boeing Company expands the business and launches amusement business.

Based on the foregoing, the Board concluded that, from totality of circumstances and evidences, relevant traders or consumers are likely to confuse or misconceive a source of opposed mark with Boeing or any entity systematically or economically connected with the opponent and declared invalidation based on Article 4(1)(xv).

IP High Court ruling: “BULK AAA” confusingly similar to “BULK HOMME”

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On March 7, 2019, the Japan IP High Court revoked a decision by the Japan Patent Office (JPO) to invalidation trial over a dispute of similarity between trademark “BULK AAA” and “BULK HOMME”, and ruled “BULLK AAA” shall be retroactively invalid. [Judicial case no. Heisei30(Gyo-ke)10141]

 

BULK HOMME

The case was brought into the IP High Court after the JPO decided to dismiss an invalidation trial (case no. 2017-890079) claimed by BULK HOMME Co., Ltd. (Plaintiff), an owner of senior trademark registration no. 5738351 for a  mark consisting of “BULK HOMME” and other literal elements (see below) over goods of cosmetics, skin care products for men in class 3.

 

INVALIDATION TRIAL AGAINST “BULK AAA”

In the invalidation trial, plaintiff asserted trademark registration no. 5931607 for word mark “BULK AAA” in standard character shall be invalid in violation of Article 4(1)(xi) of the Trademark Law since the mark is confusingly similar to “BULK HOMME” and designates cosmetics (class 3) which is undoubtedly identical with or similar to the goods designated under its own senior registration.

Article 4(1)(xi) is a provision to prohibit from registering a junior mark which is deemed identical with, or similar to, any senior registered mark.

Inter alia, plaintiff vehemently argued the term “AAA” in disputed mark lacks distinctiveness as a source indicator in relation to cosmetics since “AAA” is a term commonly used to represent the highest possible rating assigned to the bonds of an issuer by credit rating agencies. Given the circumstance, relevant consumes of cosmetics are likely to consider the term in disputed mark a qualitative indication of the goods even if the term has not been used as such  in connection with cosmetics in fact.

However, the Trial Board of JPO set aside the allegation by stating that disputed mark “BULK AAA” shall be assessed in its entirety. It is groundless to compare a word portion “BULK” of disputed mark with “BULK HOMME” given the Board could not identify any facts to assume relevant consumers of cosmetics conceive the term “AAA” of disputed mark as a qualitative indication. Both marks are sufficiently distinguishable from visual, phonetic, and conceptual points of view and dissimilar as a whole.

To contend against the decision, plaintiff filed an appeal to the IP High Court.

 

IP HIGH COURT DECISION

The IP High Court, to the contrary, sided with plaintiff and completely negated fact-findings made by the Trial Board of JPO. The Court held the term “AAA” is recognized as a qualitative indication even when used on cosmetics and thus the word portion of “BULK” is likely to play a dominant role of source indicator. If so, it is anything but inappropriate to pick up the word “BULK” from disputed mark and compare it with other mark in the assessment of mark similarity.

Besides, “HOMME” is a French word meaning “for men”. From the produced evidences, it seems apparent the word has been used in relation to men’s cosmetics, and consumers are accustomed to it so that they can recognize the meaning. Given the term is depicted in a thinner font than “BULK” in the citation, “BULK” gives dominant impression as a source indicator in the mind of consumers. Accordingly, it is reasonable to pick up the word “BULK” from the citation and compare it with other mark in the assessment of mark similarity.

The Court found that the Trial Board materially erred in the fact-finding and assessing similarity of mark. As long as dominant portion “BULK” of both marks and designated goods are identical, disputed mark shall be invalid based on Article 4(1)(xi).

Is Marie-Antoinette a name of French Queen consort or a trademark?

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The Japan Patent Office (JPO) ordered to dismiss an invalidation trial against IR no. 1238820 for word mark “Marie-Antoinette” by finding the mark shall be irrevocable under Article 4(1)(vii) of the Trademark Law. [case no. 2017-68002]

Tempting Brands Netherlands B.V. (NL), filed an international registration for the mark over goods of “Bleaching preparations [deodorants] for cosmetic purposes; perfumery, essential oils, cosmetics, hair lotions; dentifrices; cosmetic soaps, soaps for personal use; douching preparations for personal sanitary or deodorant purposes [toiletries]” in class 3 and others in class 9, 18 and 25 on Dec. 5, 2014 claiming priority based on Benelux TM application dated Aug. 22, 2014, and designating Japan which granted registration of the mark on Feb. 10, 2017.

To challenge, an invalidation trail was filed against the mark. Claimant, a Japanese business entity asserted the mark shall be invalidated in violation of Article 4(1)(vii) of the Trademark Law on the grounds that the mark “Marie-Antoinette” written in a plain letter represents the late ill-fated queen consort of King Louis XVI of France who has been highly well-known as a symbolic queen of beauty among relevant public not only in France but also Japan and other countries. If so, it is extremely harmful to prestige of “Marie Antoinette” and social affections on the historical figure to admit an exclusive right on the name to any unrelated entity. It may inevitably offend public order and morals

Article 4(1)(vii) of the Trademark Law prohibits any mark likely to cause damage to public order or morality from registration. Trademark Examination Guidelines provides  “Name of a well-known or famous historical personage likely to free-ride on public measures derivative from the personage and damage the public interests in face” as an example to apply the article.

The Invalidation Trial Board decided the mark shall not be subject to the article due to the following reason.

It is unquestionable that “Marie-Antoinette” represents a name of queen consort of King Louis XVI of France and becomes famous in France as well as Japan. In the meantime, the Board could not see a fact that the name has been made use of for revitalization of local communities or tourism industry. If so, it is quite unlikely to happen that the mark could offend public order and morals when used on goods of class 3. Besides, the Board has no reason to believe registration of the mark would cause disrespect for France and French people as well as international fidelity.  Besides, there finds no circumstances to conclude the mark is proscribed to use by other legislation and applicant apparently filed the mark with a malice or fraudulent intent to be blamed.  Based on the foregoing, the international registration shall be deemed valid since the Board was unable to find out any relevant facts to apply the article on the case.

It is not freely allowed to use and register a name of historical personage as trademark. JPO rejected “Darwin” and “Monet” based on Article 4(1)(vii), but allowed registration of “Elvis”.